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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

USPTO Proposes Revising Fees for Post Grant Patent Proceedings

Posted On: Sep. 5, 2012   By: Scott A. McKeown
USPTO-Post grant fees_Proposal Apportions Post Grant Patent Trial Fees Into Petition & Trial Phases

As I predicted in early August, the USPTO has announced a proposal to apportion the filing fees for the new post grant proceedings of the Patent Trial & Appeal Board (PTAB) across petition and trial phases; primarily as a mechanism to facilitate refunds. A portion of the proposed fees would correspond to the cost of considering the petition filing, the second portion would correspond to the cost of conducting the trial. This proposed fee structure is set pursuant to Section 10 of the America Invents Act (AIA), and provides revised fees not only for the new post grant patent proceedings, but also for ex parte application prosecution as well. The Notice of Proposed Rulemaking (NPRM) will be published in the Federal Register on Thursday. (advanced reading room copy here)

Aside from the post grant fee apportionment (discussed in detail below, which actually provides a slight fee reduction), notable fee increases include a change to the RCE filing fee for ex parte prosecution. The RCE fee based upon the number of previously filed RCEs. For example, the cost of an RCE moves from the current $930 for large entitites to $1200 for the first RCE, and $1700 for the second and subsequent RCEs. You may recall that initially the USPTO was seeking a change to $1700 for all such filings. The Office has now recognized that since 70% of applicants file at least one RCE, it seems some modest additional time is required to resolve most issues, hence the difference in pricing between the first and second RCE filing.

As to fee decreases, the following are noteworthy:

-The filing fee for ex parte patent reexamination is proposed to be decreased from the $17,750 (effective on September 16th) to $15,000, corresponding changes are made for small entity and micro entities. The filing fees for supplemental examination is likewise decreased.

Returning back to the apportionment of post grant fees, currently, the post grant fees are all inclusive, $27,200 for Inter Partes review (IPR) and $35,800 for Post Grant Review (PGR) (plus any excess claim fees). These all inclusive fees are non-refundable.

The USPTO has proposed allocating the specific costs of post grant proceedings into four discrete components. The proposed fee structure enables the USPTO to readily identify funds for refund.

Using IPR as an example, the first fee component is the cost of filing an IPR petition, which is set to a flat $9000 (for up to 20 claims). If the IPR is not instituted, this fee is not returned. The second fee component is a $200 surcharge per claim for each claim in excess of 20. The second fee component is refundable if an IPR is not instituted.

The third and fourth fee components are trial institution fees. The third is $15000 for an IPR trial of up to 15 claims. This fee is refundable if the trial is not instituted. The fourth fee is a $400 surcharge per claim for each claim over 15.  This fee would be returned if the IPR is not instituted.

Following the above guidleines, the USPTO has provided an example for an IPR seeking a trial on 52 claims. The petitioner would pay $44,200 ($9,000 plus 32 (52-20) x $200= $15,400); this is the first and second fee components. The third and fourth fee components would be calculated as ($14,00 plus (52-15) x $400=$28,800.  $15,400+$28,800 = $44,200

The USPTO reasons that 25% of petitioned claims will not be reviewed for trial (hence the 20 claim and 15 claim difference in fee calculations). Under the current all inclusive fee structure the same IPR would cost $46,400. ($27,200 + (32 x $600))

With the publication of the NPRM, the USPTO is opening a 60-day comment period in which the public can provide input on the latest proposal. Following the comment period, the Office will prepare the final fee-setting rule, which would go into effect no less than 45 days after it is published in the Federal Register.

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